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17 May 2010

UK ponders trademark protection for two-character domains

With the UK yet to release one- and two-character domains, registry Nominet is canvassing for feedback on the proposed introduction process. Brand owners would be advised to get involved to avoid a repeat of the German experience, where the lack of a sunrise period resulted in a free-for-all for key domains.

14 May 2010

Europe's anti-counterfeiting team between a rock and a hard place

The European Observatory on Counterfeiting and Piracy is to hold its first events at the European Parliament from June 21 - 25. The week will include exhibitions, information sessions, short films and ceremonies to raise the profile of the observatory and awareness of the issues surrounding counterfeiting and piracy. These are commendable activities, so why does a question mark hang over the location of the observatory?

13 May 2010

General Court sketches out similarities between design and trademark law

The latest decision from the General Court of the European Union has clarified when an earlier trademark right can be used to invalidate a later registered Community design, shedding new light on the interplay of trademark law and design rights under the Council Regulation on Community Designs (6/2002). The methodology used by the court will be welcomed by many trademark professionals.

11 May 2010

Joint venture partners forsake trademarks at their peril

According to a survey conducted just a few years ago, chief executives' top concern when embarking upon a joint venture is the control of their IP rights. That's the kind of statistic we love to hear at WTR, as it shows that senior management grasp the value inherent in intellectual property. Unfortunately, WTR's own more recent survey found that for many brand owners the opposite is true.

11 May 2010

Mark owners feel ignored, but will the European Commission listen?

European trademark owners are on the warpath. They are already unconvinced that the study into the EU trademark system is listening to their opinions, and now there is dismay that the European Council is trying to force the OHIM to commence anti-counterfeiting work and the 50% split of CTM renewal fees with national offices. So they are going right to the top: user association MARQUES today meets with the European Commission to try and explain why now is not the time to start work on these areas.

10 May 2010

It looks like the USPTO desires free trademark data for all, too

Here's a gentle whisper from the United States Patent and Trademark Office (USPTO). It appears that the agency is searching for a partner that can help it open up its trademark register to the public free of charge. The USPTO, which already operates a searchable trademark database, made noises last year about developing its technology in the interests of transparency and user experience.

07 May 2010

Now governments are backing brand owners in trademark gTLD debate

The saga over trademark protection in the new generic top-level domain space may resemble a long-running soap opera but the UK Intellectual Property Office is planning to cut through the confusing plot turns to help trademark counsel work out exactly why this topic needs their urgent attention - and it is not before time.

07 May 2010

Campinos edges closer to OHIM's presidential chair

The European Union's Permanent Representatives Committee has recommended the approval by the European Council of Antonio Campinos as president and Christian Archambeau as vice president of the OHIM, WTR has learnt. The final decision now lies with the European Council, which will meet later this month to discuss the appointments.

06 May 2010

Spain launches IP plan, but is a top-down approach enough?

Last month the Spanish minister of industry, tourism and commerce, Miguel Sebastián, unveiled the country’s first Strategic Plan for the Promotion of Intellectual Property. Although this initiative has been broadly welcomed by the industry, so long as legal education is under-supported by government initiatives, the nation's IP regime can never develop to its full potential.

04 May 2010

WTR Industry Awards shortlist highlights the best in-house counsel

Over 1,600 nominations and two months of extensive research later, the shortlist for this year's WTR Industry Awards is now live. The awards recognize the vital work of in-house trademark counsel and identify those teams and individuals that are performing their functions to the highest standards.

04 May 2010

Visionary trademark managers will demand more than a law firm

While the folks at the recently merged Hogan Lovells state that the new firm offers "enhanced services", one wonders exactly how the organization will differentiate its IP offerings in a competitive market. With many law firms looking increasingly old-fashioned, in-house trademark managers continue to flock to non-traditional service providers – drawing the future battle lines for IP spend.

30 April 2010

Is the Special 301 Report out of date?

The Special 301 Report is starting to look tired. Not only will ACTA be a much stronger instrument in stopping the counterfeit trade, but the White House plan to fight IP theft through better stakeholder coordination sounds like a much more sensible approach to the problem.

30 April 2010

Rosetta Stone v Google thrown out: mark owners need new tactics

There is no stopping Google selling trademark terms as keywords. That is the message from the US courts this week. A judge from the US District Court for the Eastern District of Virginia has dismissed Rosetta Stone's case against the search giant, effectively killing off once and for all the conventional method of attacking the AdWords programme.

28 April 2010

Chanel's brand may need a polish if it cannot stop No 6

If you thought that Chanel's registration for NO 5 in Class 3 was enough to stop a competitor registering NO 6 in the same class, think again. The USPTO has just rejected Chanel's opposition to the NO 6 mark, in a move that could stop owners of famous brands in their tracks.

27 April 2010

This Deloitte brand list has certainly got in-house counsel talking

Thanks to its vague methodology, the Deloitte brand list is causing a stir. Last week we noted that Thomson Reuters, one of the world's most valuable brands and parent of a company whose function is to protect brands online, had not made the list, and then asked whether this called into question the criteria behind the list. Senior in-house counsel have now joined the debate.